Can a bicycle’s design to be protected by copyright? – the Brompton Bicycle case in the EU

The European Court has ruled in case C‑833/18 Brompton Bicycle Ltd срещу Chedech/Get2Get, which concerns the possibility a bicycle’s design decision to be protected by copyright. The background is as follow:

Brompton, a company incorporated under English law whose founder is SI, markets a folding bicycle, sold in its current form since 1987 (‘the Brompton bicycle’).

The Brompton bicycle, the particular feature of which is that it can have three different positions (a folded position, an unfolded position and a stand-by position enabling the bicycle to stay balanced on the ground), was protected by a patent which has now expired.

For its part, Get2Get markets a bicycle (‘the Chedech bicycle’) which is visually very similar to the Brompton bicycle and which may fold into the three positions mentioned in the preceding paragraph.

On 21 November 2017, SI and Brompton brought an action before the Companies Court, Liège, Belgium seeking a ruling that Chedech bicycles infringe Brompton’s copyright and SI’s non-pecuniary rights and, consequently, an order that Get2Get cease its activities which infringe their rights and withdraw the product from all sales outlets.

In its defence, Get2Get contends that the appearance of the Chedech bicycle is dictated by the technical solution sought, which is to ensure that the bicycle can fold into three different positions. In those circumstances, such appearance could be protected only under patent law, not under copyright law.

The applicants in the main proceedings claim that the three positions of the Brompton bicycle can be obtained by shapes other than those given to that bicycle by its creator, which means that its shape may be protected by copyright.

The Companies Court, Liège observes that, under Belgian law, any creation is protected by copyright when it is expressed in a particular shape and is original, which means that a utilitarian object, such as a bicycle, may be protected by copyright. In that regard, although shapes necessary to obtain a technical result are excluded from copyright protection, the fact remains that doubt arises when such a result can be obtained by means of other shapes.

The referring court states that, in the judgment of 8 March 2018, DOCERAM (C‑395/16, EU:C:2018:172), which was delivered in the field of design law, the Court interpreted Article 8(1) of Regulation No 6/2002 as meaning that, in order to determine whether the features of appearance of a product are exclusively dictated by its technical function, it must be established that the technical function is the only factor which determined those features, the existence of alternative designs not being decisive in that regard.

It asks, therefore, whether a similar solution should be adopted in the field of copyright when the appearance of the product in respect of which copyright protection is sought under Directive 2001/29 is necessary in order to achieve a particular technical effect.

In those circumstances, the Companies Court, Liège decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1)  Must EU law, in particular Directive [2001/29], which determines, inter alia, the various exclusive rights conferred on copyright holders, in Articles 2 to 5 thereof, be interpreted as excluding from copyright protection works whose shape is necessary to achieve a technical result?

(2) In order to assess whether a shape is necessary to achieve a technical result, must account be taken of the following criteria:

–   The existence of other possible shapes which allow the same technical result to be achieved?

–   The effectiveness of the shape in achieving that result?

–    The intention of the alleged infringer to achieve that result?

–    The existence of an earlier, now expired, patent on the process for achieving the technical result sought?’

The Court’s decision:

Articles 2 to 5 of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as meaning that the copyright protection provided for therein applies to a product whose shape is, at least in part, necessary to obtain a technical result, where that product is an original work resulting from intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality, which it is for the national court to verify, bearing in mind all the relevant aspects of the dispute in the main proceedings.

Twitter lost an opposition against a trademark TWEET in Japan

The US company Twitter lost an opposition proceeding against a trademark application TWEET filed by a Japanese company for class 33: Japanese sake [Nihonsyu]; sake, distilled rice spirits; sake substitute; Japanese white liquor [Shochu]; Japanese sweet rice-based mixed liquor [Shiro-zake]; Naoshi [Japanese liquor]; Japanese Shochu-based mixed liquor [Mirin]; western liquors; alcoholic fruit beverages; Japanese Shochu-based beverages [Chuhai]; Chinese liquors; flavored liquors.

Against this application an opposition was filed by Twitter based on possible confusion with the business of other entities and a trademark with reputation TWEET for classes other than class 33.

As it is well-known the term TWEET is used for short text messages or publications on Twitter which are up to 140 characters long.

The Japan Patent Office, however, dismissed the opposition. The reasons for this were the fact that the word TWEET is used as a descriptive term to indicate function or usage of Twitter. Based on that the consumers would not perceive it as a source of origin.

Because of this the Office considered that it is highly unlikely the consumers to make connections between alcoholic beverages in class 33 with the name TWEET and the services offered by Twitter.

Source:  Masaki MIKAMI

Is it possible to use a photo from the internet for your fashion collection?

photo-1558277646-319ce84484bdThe Milan Court has ruled in the case 2539/2020, which concerns not authorized use of a photo for commercial purposes.

In the case at hand, the Italian fashion house Antonio Marras used the following photo, downloaded from the internet, for its Fall/Winter 2014-15 fashion collection:

Screenshot 2020-05-19 at 17.05.01

A lawsuit followed in which the photographer claimed copyright infringement. In Italy, there are two main ways for the protection of photos. The first is the classic one based on the copyright law where, however, the work has to be original, created as a result of the author’s intellectual efforts. The second protection refers to ordinary, simple photos of the real-world without creative efforts in place.

According to the fashion house, there was no copyright infringement because the photo was quite simple and not original, produced without any creative efforts.

The court disagreed. Grounded its position on the European Court decision in the case Painer, C-145/10, the Italian court came to a conclusion the photo was original indeed. The arguments for this were the fact that the author chose carefully the time and the subject to take this photo. What’s more, he used technique and an angle which to invoke specific emotions in the viewers.

The court added that another backing argument for the originality of the picture was the fact that it had been registered in the US Copyright Office, which is possible only if the work is original.

Source: IPKat.

WIPO announced its new Director General

wipo-internship-2017WIPO reports about the election of Mr. Daren Tang as the new Director General of the organisation. He will succeed Mr. Francis Gurry, who has served as WIPO’s Director General since October 1, 2008.

As it is well-known, there was a tension between the US and China about the candidates for this position. The US was completely against the China’s nomination including in the light of the trade conflict between both countries.

Mr. Daren Tang, as a former Chief Executive of the Intellectual Property Office of Singapore, was accepted as a good choice in that regard.

For more information here.

Mexico joins the Hague Agreement

mexico-1460659_1920WIPO reports about the accession of Mexico to the Hague Agreement Concerning the International Registration of Industrial Designs.

As it is known, this Agreement allows one industrial design to be registered in different Member States based on one application and one fee.

The Agreement will come into force for Mexico on 06.06.2020.

Extended time limits before the EUIPO and EPO because of the COVID-19

face-mask-4890115_1920Taking into account the dissemination of COVID-19 in the EU and its declaration as a pandemic, the European Intellectual Property Office (EUIPO) took a decision to extend all tome limits regarding different trademark and design procedures. According to the announcement:

The Executive Director of the EUIPO has today (16 March) signed a decision extending all time limits expiring between 9 March 2020 and 30 April 2020, that affect all parties before the Office, to 1 May 2020. In practice, this means that time limits are extended until Monday 4 May, given that Friday 1 May is a public holiday.

Similar decision was taken by the EPO too.


Brief IP news

news-in-brief.png1. World Intellectual Property Indicators: Filings for Patents, Trademarks, Industrial Designs Reach Record Heights in 2018. For more information here.

2. How to protect your brand on social media — seven top tips. For more information here.

3. SP2025: Exchange of views at the European Parliament. For more information here.

Source: Intellectual Property Center at the UNWE. More information can be found here.